Ex Parte SkogDownload PDFPatent Trial and Appeal BoardJun 10, 201411571635 (P.T.A.B. Jun. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROBERT SKOG ____________ Appeal 2012-000696 Application 11/571,635 Technology Center 2400 ____________ Before ST. JOHN COURTENAY III, THU A. DANG, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 11-42. Claims 1-10 were previously cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-000696 Application 11/571,635 2 STATEMENT OF THE CASE Appellant’s claimed invention is a method for “controlling quality of service requests for transmissions relating to a packet data service.” (Spec. l, ll. 16-19). Independent claim 11, reproduced below with contested limitations emphasized, is representative of the subject matter on appeal: 11. A method in a mobile communication terminal comprising an application for receiving at least one packet data service from a service provider said method comprising the steps of: the application receiving a pushed service indicating message from a push proxy gateway of the service provider, said service indicating message including information that the service provider has a service content to deliver to the terminal, retrieving a set of recommended quality of service parameters that is included in the received service indicating message, said set of recommended quality of service parameters including a set of quality of service parameters within a bearer that the service provider recommends that the terminal requests for a bearer of the bearer service for reception of the service content; processing the set of recommended quality of service parameters to determine a set of processed quality of service parameters based on said set of processed, recommended quality of service parameters; and the application initiating setup of a bearer service for reception of said service content requesting the set of processed quality of service parameters for the bearer of the bearer service. Appeal 2012-000696 Application 11/571,635 3 REJECTIONS A. Claims 11, 12, 14, 15, 19-22, 24, 25, 29, 30, 32-34, 36, 37, and 41 stand rejected under 35 U.S.C. § 102(b) as being anticipated by PCT Patent Publication No. WO 01/33782 A1 (Aho, published May 10, 2001). B. Claims 13, 16, 23, 26, 35, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Aho and U.S. Patent No. 7,327,724 B2 (Muhonen, priority date May 22, 2001). C. Claims 17, 27, and 39 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Aho and “WAP WAE Specification” (WAP, Version 24 May 1999). D. Claims 18, 28, 31, 40, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combined teachings and suggestions of Aho and U.S. Patent No. 7,209,458 B2 (Ahvonen, priority date Sept. 27, 2002). GROUPING OF CLAIMS Based on Appellant’s arguments, we decide the appeal of anticipation rejection A on the basis of representative claim 11. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).1 We address § 103 rejections B, C, and D separately, infra. 1 Appellant filed a Notice of Appeal on April 14, 2011. The date of filing the Notice of Appeal determines which set of rules applies to an ex parte appeal. If a Notice of Appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title Appeal 2012-000696 Application 11/571,635 4 Rejection A - Independent Claim 11 Issue: Under § 102, did the Examiner err in finding Aho discloses the contested limitations of representative claim 11? In particular, is the Examiner’s interpretation of the claim terms “quality of service parameters” and “recommended quality of service parameters” overly broad, unreasonable, or inconsistent with the Appellant’s Specification? The issue in this appeal turns on claim construction. For the reasons discussed below, we are not persuaded of error regarding the Examiner’s broader interpretation of the contested claim terms. Regarding the claim term “quality of service parameters,” Appellant contends to be “unaware of any plain meaning of ‘quality of service’ parameters that would include size, type, originating address, and/or importance of a message.” (Reply Br. 2). In support of the rejection, the Examiner explains how the claim term “quality of service parameters” is being interpreted: The notification message of Aho contains information on importance, size, and type of the multimedia (pg. 10, lines 25- 37 of Aho). The claim language does not limit what “factual information” can qualify as the QoS parameters. As a result, using the broadest reasonable interpretation, the Examiner interprets the information on the size, type, and importance of the multimedia to be QoS parameters. On pg. 9, line 24-pg. 10, line 6 of the specification, the Appellant provides a list of “UMTS QoS attributes”. However, nothing in the claim language requires the Examiner to interpret “QoS parameters” as attributes on that list. (Ans. 22, emphasis added). 37 of the Code of Federal Regulations (37 C.F.R. § 41.1) applies to the appeal. See also MPEP § 1220, Rev. 8, July 2010. Appeal 2012-000696 Application 11/571,635 5 We agree with the Examiner’s legal conclusion regarding the broadest reasonable interpretation of “quality of service parameters.” Moreover, because “applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted). Although the scope of representative claim 11 is not limited to the list of exemplary quality of service parameters (attributes) listed in Appellant’s Specification (pages 9-10), we conclude a broad but reasonable interpretation of “quality of service parameters” at least covers or includes the Quality of Service parameters (attributes) described in Appellant’s list in the Specification. (Id.).2 We particularly note Appellant’s list of attributes includes information on the size (“Maximum SDU size”), importance (“Traffic handling priority”), and type (“SDU format information”) of content (Spec. 9-10). Aho describes the use of size, type, and priority parameters: The wireless terminal MS makes the decision concerning retrieval of the multimedia message or the multimedia components it comprises and selects an appropriate bearer(s) with the aid of specific data conveyed in the notification message 30. Typically, this data includes information on the size and type of the multimedia message or the multimedia components it comprises. According to the invention, selection of a bearer may be performed on the basis of only one property 2 “[A]lthough the specification often describes very specific embodiments of the invention, we have repeatedly warned against confining the claims to those embodiments. . . . [C]laims may embrace ‘different subject matter than is illustrated in the specific embodiments in the specification.’” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en banc) (citations omitted). Appeal 2012-000696 Application 11/571,635 6 of the multimedia message or the multimedia components it comprises. This property can be for example the type, size or priority value (importance) of the multimedia message or the multimedia components it comprises. Thus, selection of a bearer according to the invention can be made for each multimedia component of the multimedia message, for example, merely on the basis of the size of the multimedia components. Furthermore, certain user configurable rules, the priority value of the multimedia message and certain properties of the wireless terminal MS, such as the available memory space and the terminal's ability to process and display different types of multimedia component types on its display, can be taken into consideration in the decision-making process. (Aho, 11, ll. 16-31, emphasis added). Therefore, on this record, we are not persuaded the Examiner’s reading of the contested term “quality of service parameters” on Aho is overly broad, unreasonable, or inconsistent with the Specification. Regarding the claim term “recommended quality of service parameters,” the Examiner notes: The Appellant alleges the QoS parameters of Aho are “merely used to determine if the terminal is capable of receiving and processing [the multimedia message]” (emphasis removed) (pg. 8 of Appeal Brief). In Aho, the wireless terminal uses the QoS parameters found in the notification message to (1) determine whether or not the wireless terminal is able to retrieve the multimedia and (2) select the most appropriate bearer for transfer of the multimedia (pg. 11, lines 5-14 of Aho; Note: a bearer is simply a radio connection between 2 devices). First, because the wireless terminal does not have to retrieve the multimedia, setting up a bearer is optional (pg. 13, lines 6-13 of Aho). An optional bearer only has "recommended QoS parameters" because the wireless terminal can choose not to set up a bearer with the stated QoS parameters. Second, the recommended QoS parameters of Aho are used to select “the most appropriate bearer” (pg. 11, line 13 of Appeal 2012-000696 Application 11/571,635 7 Aho). The size, type, and priority of the multimedia are factors in selecting a bearer (pg. 13, lines 31-37 of Aho). For example, priority can ensure a bearer with the most transfer capacity is selected (pg. 15, lines 1-7 of Aho). (Ans. 23 (alteration in original) (emphasis in original omitted, emphasis added)). We agree with and adopt the Examiner’s reasoning with regard to the broadest reasonable interpretation of the contested “recommended quality of service parameters.” (Claim 11). Turning to the Specification for context, Appellant indicates that Figure 3 and page 11, lines 14-31, support the method step of “retrieving a set of recommended quality of service parameters.” (App. Br. 3, claim 11). Appellant’s disclosure describes, “[t]he procedure illustrated in Fig. 3 allows the service provider to influence the QoS of the bearer service instead of relying on ‘hard coded’ QoS parameters inside the mobile client terminal.” (Spec. 11, ll. 33-34 (emphasis added)). We conclude the Examiner’s interpretation of “recommended quality of service parameters” as including parameters that make optional or influence the result of the selection of the bearer is not overly broad, unreasonable, or inconsistent with the Appellant’s Specification. Therefore, on this record, we are not persuaded that the Examiner has erred. Moreover, Appellant’s description of the procedure depicted in Figure 3 includes the express statement: “[h]ow to implement such software code means in order for it to be able to perform the functions described herein using common computer languages is well known to the person skilled in the art and will not be explained in further detail.” (Spec. 12, ll. 19-22; emphasis added). This statement appears to be an acknowledgement that Appeal 2012-000696 Application 11/571,635 8 implementing technologies for selecting a bearer as shown in Figure 3 were well known in the art at the time of Appellant’s’ invention.3 Thus, Appellant appears to be urging the patentability of the claims on appeal based upon claimed features that were known to artisans at the time of Appellant’s invention, as further evidenced by the cited prior art of record relied on by the Examiner. Accordingly, on this record, we are not persuaded the Examiner erred. We sustain the Examiner’s § 102 rejection A of representative claim 11, and grouped claims 12, 14, 15, 19-22, 24, 25, 29, 30, 32-34, 36, 37, and 41 (not argued separately) which fall therewith under § 102 rejection A. See 37 C.F.R. § 1.37(c)(1)(vii)(2004). REJECTIONS B, C, and D under § 103 Appellant contends the remaining dependent claims are patentable because the cited additional references fail to cure the deficiencies in Aho (App. Br. 9-10). However, we find no deficiencies regarding Aho for the reasons discussed above regarding rejection A of claim 11. Therefore, we sustain the Examiner’s §103 rejections B, C, and D of the remaining dependent claims for the same reasons discussed supra, regarding claim 11. 3 A statement by an applicant in the specification or made during prosecution identifying the work of another as “prior art” is an admission which can be relied upon for both anticipation and obviousness determinations, regardless of whether the admitted prior art would otherwise qualify as prior art under the statutory categories of 35 U.S.C. § 102. Riverwood Int’l Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003); Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988). Appeal 2012-000696 Application 11/571,635 9 DECISION We affirm the Examiner’s decision rejecting claims 11-42. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED msc Copy with citationCopy as parenthetical citation